‘Engineered Tax Services’ Trademark Revived by 11th Cir.

Written May 19, 2020

The US Court of Appeals for the Eleventh Circuit on May 14, 2020, reversed and remanded a lower court decision to invalidate Engineered Tax Services Inc.’s (ETS) trademark covering its name, finding that the phrase “Engineered Tax Services” may be distinctive enough to function as a valid trademark. Engineered Tax Servs., Inc. v. Scarpello Consulting, Inc., 11th Cir., No. 18-13690, 5/14/20.

ETS and Scarpello Consulting Inc. both provide specialized tax services. ETS sued Scarpello for trademark infringement, and Scarpello countered that ETS’s federal trademark for “Engineered Tax Services” was invalid.

The district court agreed with Scarpello, ruling that no reasonable jury could find ETS’s mark distinctive enough to identify the source of its services.

But the Eleventh Circuit said “Engineered Tax Services” may be a suggestive mark—which is inherently distinctive—because it could take some “imagination” to connect the name to ETS’s services.